A Guide to Canadian Trademark Registrations
Globalization at its core means broad interstate and indeed international commerce. As Canadians and Americans see increasing value in developing trade and commercial collaboration, Canadian trademarks are gaining popularity and recognition as important brand assets. Canadian trademarks registrations follow the same fundamental principles as US Trademark registrations and require the unique combination of a proprietary name/logo/slogan paired with the sale of a good/service.
Steps by Step Guide to Registering a Canadian Trademark
1. Conduct a Trademark Search
Undoubtedly, the most important part of the registration process is the clearance search. Similar to a US Trademark Search, the purpose of a Canadian trademark search is not merely to determine whether an exact match of your desired trademark already exists but rather to identify whether or not any existing trademark is the Canadian Trademark Office have either been applied for or registered which are sufficiently similar to your mark, given the products/services which you intend to sell under the banner of your mark. Thus, when developing your company name, do your due diligence; come up with a name that is unique to the product/service you are providing (if you are selling clothing, don’t call your company “Best T-Shirts) and have an experienced trademark attorney to conduct a TM Search.
2. Work with a Trademark Attorney
The Canadian Trademark Office has its own set of proprietary rules regarding who may or may not submit a Canadian trademark application. If you do not live in and/or have a meaningful commercial relationship with Canada (this part gets to be a bit tricky), you must be represented by an approved Canadian agent who can serve as the recipient of any necessary correspondence with the Canadian trademark office. The point here again is to have a local appointee – thus, if you are a Canadian citizen, this requirement is a moot point.
3. Submit your Canadian Trademark Application
Okay, so at this point, you are (relatively) certain that your trademark has a sufficiently high chance of success and you’ve determined whether or not you need to have a Canadian trademark representative manage your case. Now, you’re ready to submit your trademark application. Canadian Trademark Applications require submitting the following information:
- The name and address of the individual/company submitting the trademark application
- A description of the trademark to be submitted
- A description of the goods/services to be sold under the banner of the trademark
- The application fee
Remember, you are not limited in the number of goods/services to be listed in each respective trademark application however as you increase the number of goods/services sold under the banner of your mark, the government fees will vary. Similarly, while you can list multiple goods/services in each application, you must submit a separate trademark application for each type of trademark. For example, if your brand consists of a Name, Logo, and Phrase, each one of these separate and distinct brand assets will require a separate trademark application. Application fees must be paid at the time of the submission of the mark and may be rendered with a credit card (VISA, MasterCard, or American Express), checks, postal money order (in Canadian dollars), and direct payment.
4. Your Canadian Trademark Application is Reviewed
Now it’s time to sit back and relax. The Canadian trademark office will review the application to ensure that it is at least procedurally (not missing anything) complete and then it will be passed along to an examiner for a substantive review. The examiner will of course conduct its own search of the Canadian trademark database to see if any existing or pending marks which are too similar to your own are on file. If the mark is sufficiently distinct, the mark will be published to the Trademarks Journal for Opposition (the equivalent of the US’s Official Gazette) and if the mark does not go opposed, the trademark will Register. This last part is quite important. While the examining attorney may not notice any existing marks which may serve as a reason to halt the admission of your mark, the publishing period to the Trademarks Journal provides any party with a legitimate grievance to make the case that your mark should not be approved. Opposition proceedings are expensive and painstakingly long and should they prove to be successful, can nullify your trademark application. Please speak with a trademark attorney if your mark is Opposed.
5. Your Canadian Trademark Application is Registered
Ultimately, the Canadian trademark office is fairly responsive to issues and if in fact the examining attorney does raise an issue, you will be provided with an opportunity to respond and argue your case and appeal the objection to the Federal Court of Canada. Crossing our fingers, if your mark was sufficiently distinct and did not infringe upon the rights of any existing trademark holders, you must pay the final fee (upon receiving your notice of allowance) and the Canadian Registrar will send you a Registration Certificate for your Canadian trademark. Canadian trademark registrations are preliminarily valid for a period of 15 years at which point in time the registration may be renewed for an additional 15 years.
Important Tips for Filing a Canadian Trademark Application
It is critically important to submit and file your Canadian trademark application before you start selling your products or services; it is a terrible feeling to wake up one morning and see that a competitor has seen your online-marketing efforts and filed your trademark before you. Similarly, if you know that you intend to sell in other countries, conduct a trademark viability search in those other countries before committing to your name in Canada. Intellectual property truly has emerged as a global proposition and you want to make sure that your trademark portfolio is viable internationally.
